Episode 19: How plant breeders’ rights are protected in Canada

Lisa Desjardins (Lisa): You're listening to Canadian IP Voices, a podcast where we talk intellectual property with a range of professionals and stakeholders across Canada and abroad. Whether you are an entrepreneur, artist, inventor, or just curious, you will learn about some of the real problems and get real solutions for how trademarks, patents, copyrights, industrial designs, and trade secrets work in real life. I'm Lisa Desjardins, and I'm your host. The views and opinions expressed in this podcast are those of the individual podcasters, and do not necessarily reflect the official policy or position of the Canadian Intellectual Property Office.

Canada's agri-food sector is set out to be one of the top five competitors globally. To succeed, our farmers will need plants that can better resist drought and pests, need less water, and be able to cope with the changing climate. Plant breeders around the world are hard at work.

The regulatory system is also there to support them in form of an intellectual property right called plant breeders' rights or PBR. It's a little known IP right. Only 300 or so applications are filed in Canada each year, and most of them are from foreigners. But what are these rights and why are they important?

With me today is no one less than Anthony Parker, Canada's Commissioner of the Plant Breeders' Rights Office located in the Canadian Food Inspection Agency. Anthony's group secures the rights of plant breeders by granting protection for their new varieties, a rather unusual work done by an interesting and small group of people. Anthony has also a great understanding of other IP rights such as patents as he is currently finishing up a Master of Law in intellectual property at Osgoode Hall, York University.

Anthony, I'm so pleased to welcome you to our podcast today, welcome.

Anthony Parker (Anthony): Thanks so much, Lisa. I'm really thrilled to be here. It's really an honour to be on the Canadian IP Voices podcast. I'm a devout follower of it, so this is wonderful for me.

Lisa: That's great! Now we're going to talk about plant breeders' rights in a little moment, but first, can you tell me a little bit about yourself and the kind of work that you do at the Canadian Food Inspection Agency?

Anthony: Yeah, well, it's always hard to describe oneself. I'd say essentially, you know I'm a farm kid at heart. So I grew up on a farm just outside of Ottawa, and I love plants and I love agriculture and this kind of led me to this obscure world of plant breeding. I don't think anyone as a child kind of dreams of growing up to be the Commissioner Plant Breeders' Rights, so I kind of feel like the job found me. I didn't necessarily go seeking for the job.

We operate in a very large government department; the Canadian Food Inspection Agency. It has about 6,000 employees, but only eight of those, myself included with five examiners and two support staff, are charged with sort of delivering the intellectual property of regime, which is, we know as plant breeders' rights.

So the best way to kind of conceptualize us is to think that we're a miniature version of the Canadian Intellectual Property Office. So we do all the same things. We accept applications, we conduct examinations on a quarterly basis. We publish something called the Plant varieties journal.

So if you think about other forms of IP you know, think about the trademarks journal and many of your listeners would be familiar with that. So it's the mechanism for public scrutiny, and objection, if individuals feel that you know, perhaps the plant variety isn't entitled to receive protection.

We also do a lot of work at the international level. We work on policy setting and standard setting, so each one of my team has a file that they hold to engage it internationally and we also like to help others so we're involved in capacity building. So recently we have been helping Senegal implement plant breeders' rights system and we've been invited to help countries like Trinidad and Tobago upgrade their law and move to a more modern form of PBR protection.

But I have to tell you, Lisa, the best part of the job it happens between April and October, and that is the growing season in Canada. In order to obtain plant breeders' rights protection, the breeder must demonstrate that their varieties, new, distinct, uniform, and stable. So three of those criteria, distinctness, uniformity, and stability is actually assessed on site at the breeders' premises. So myself and my team, you know, spend those wonderful months from, you know, spring until fall, traveling across the country doing these assessments. So you know at any given time we could be in Saskatoon, looking at wheat or canola, or Grand Falls, New Brunswick, looking at potatoes, Southern Ontario, looking at petunias and a greenhouse or you know, even Agassiz, BC, looking at blueberries, so that's kind of our life. And, you know, to give you a sense of the volume that we have to deal with. Last year we did 300 examinations spanning 7 provinces at 41 locations. So you know, you have to love plants to kind of, you know, want to do this type of work and I have to say for myself and my team, we just adore plants, so it's the perfect job for us.

Lisa: That  does sound like you, you'll be very busy in the few months ahead of us. We'll go into why plant breeders' rights are important in a little moment. But before we do that, I thought maybe you could explain to those who are not familiar with the plant breeders' right; what exactly is a plant breeders' right and how long is it valid for?

Anthony: Yeah, so great question. You know, conceptually, plant breeders' is probably most similar to patent protection, so there is these fundamental criteria that you have to meet to obtain protection. You know, many of your listeners will be familiar with patents. You know it has to be new or it has to have novelty, has to be known-obvious, it has to have utility. The criteria, as I mentioned for us is a little bit different. It has to be distinct, uniform and stable, but also, and this is really kind of interesting, the scope of the right is not as expansive as the patent world. So patent world you have exclusivity over use, and that's really broad. In the plant breeders' rights world, it's more enumerated. You have certain acts for which you have exclusive rights over the propagating material. And propagating material is the thing of the plant that could reproduce itself. So it could be the seed, or it could be the budwood, or it could be some cuttings off the plant and the term of protection lasts for 20 years, so again, similar to patents except for the case of certain crop kinds that take a longer period to breed. So in the case of grape vines and trees, it's actually 25 years because it easily takes, you know, 20 years to breed a new apple tree variety and a lot longer to get adaptation in the marketplace, so the period of protection is a lot longer. So very much like patent protection, a breeder can enter into licensing agreements, so have seed companies sell their variety, have nurseries sell their plants and generally through those licensing agreements they collect royalties. So each time the bag of the seed is sold in an agricultural context to be sown on a farm the breeder could collect a royalty, or in the case if they're breeding, let's say an ornamental plant, something like a rose, every sale at a nursery will bring revenue back in to fund their activities.

Lisa: It's the exclusive right is mainly for commercial activities. I'm not going to get in trouble for planting an avocado in my kitchen pot.

Anthony: Yeah, absolutely not, so you know, one of the interesting things about plant breeders' rights is it tends to be more open-ended than more restrictive forms of IP, so there's exceptions, very powerful exceptions that are broad in the plant breeders' rights and one of them is a private non-commercial use exception so if you take a PBR protected variety, if you're growing that avocado plant at home and it has PBR protection, you have nothing to worry about it. But the minute you go out in the marketplace and start selling it, well, then you've got a bit of a problem.

Lisa: Okay, Okay. That's good to know. I was looking through the database and like most IP rights it is a public database that is accessible to the public and there's an amazing variety of different plants in there, but I was wondering what kind of plant varieties are being protected by Canadians because not all of these plant breeders rights applications are actually from Canadians.

Anthony: Yeah, no, that's a great observation Lisa. And the best way I could kind of describe what's happening in the Canadian marketplace is that Canadian breeders are specializing, so there's certain things that we do in Canada very well, quite often better than anyone else, but we don't do everything. And there's a strong reliance on either varieties coming from different countries so foreign varieties being imported into Canada, or foreign direct investment in breeding activities in Canada.

So to give you a sense, about 85% of the filings for plant breeders' rights, the variety is owned by a title holder somewhere else, it's not Canadian. So only 15% of those varieties come from actual Canadian applications, and mostly it's going to be the public sector. You know to give you a sense of who are those that are filing, the largest player domestically in Canada is the Canadian Ministry of Agriculture, so federal government department called Agriculture and Agri-Food Canada.

And what we see from them is wheat varieties, they are the dominant player in wheat. They have about 50% market share in barley varieties. They do other cereals such as oats as well. And they do some interesting crops like sweet cherry varieties. They are the number one breeding program internationally for sweet cherries. They export all over the world. It's a very successful program, but yet we only have about 2,000 hectares and sweet cherry production here in Canada but they very, very much dominate.

Others that take advantage of PBR protection and our domestic entities are the university system. So those Canadian universities that have an agricultural and breeding program, the largest of which is the University of Saskatchewan. So they do, in addition to the cereals, much like Agriculture and Agri-Food Canada. The things like wheat, barley and oats.

They have a very strong pulse breeding program and people often know them as legumes, so they breed field peas, they breed beans, they do chickpeas, lentils, and more recently faba beans. We probably receive anywhere from 20 to 30 filings from them on an annual basis. Other agricultural universities, such as University of Guelph has a small number of filings and we've received some from the Alberta government also has a breeding program. So there's actually very few breeders in Canada that are domestic in nature, are domestically owned, that fall outside of those public sector entities.

On the flip side, for other crop kinds that we don't necessarily specialize in, the dependency is certainly from offshore, so I'll give you a flavour of that. Almost all potato varieties that are being grown, and new ones, are coming from Europe or the United States. The ornamental variety, so you know,
for your gardeners, it's coming up to planting season, people's attention is turning to going to nurseries.

Well, most of the annuals, perennials, flowering shrubs, they're going to be coming from Europe or the United States. So you really see this element in the marketplace where those Canadian breeding entities have specialized. And of course I've got to mention cannabis. We are doing very well in cannabis here in Canada, have specialized in certain crop claims, but in order to fill the gap and make sure that farmers and nurseries and orchards have access to all innovations, we have a lot that's coming from offshore as well.

Lisa: You mentioned that a plant breed would have to be stable. How do you assess that I'm not sure, I get it because a plant takes time to grow, so do you come back to assess that?

Anthony: Yeah, that's a great question. So yes, stability is really, when it comes to assessment, it's the ability of the plant to reproduce itself over subsequent generations and still remain the same.

So as part of that distinctness, uniformity and stability examination, or we call it DUS, we get the breeder to furnish us a data over multiple growing seasons to show us okay, yes, this variety has remained indeed unchanged from one year to the next. And the interesting thing is, you know what we're talking about is life forms right? So plants are living things and over time through continuous reproduction, they might actually lose their uniformity and stability. Now, we've never had this happen before in the 30 years of operation, but conceivably it is a reason for revocation at the right. So if over time the thing that came in for protection is no longer uniform and stable, you know, we could actually remove the right for that variety.

Lisa: Interesting. What are some of the common misconceptions people have about PBRs?

Anthony: Yeah, that's a great question, and the first thing that comes to mind is people automatically assume PBR is like a patent for plants. So they have in mind this very restrictive form of IP that is very much focused on the innovator and not so much around balancing it with other interested parties in society, so you know the idea of user rights on the other side of the equation.

In fact I've got this great story and I never talk about my work when I go to dinner parties or barbecues because the minute you start talking about food, we start talking about where the food came from and then right after that we lead into, "oh well, you wish you had intellectual property rights" and this, you know, friend that I've known for about 10 years asked me the question. I wasn't paying attention, I say, "well, I grant IP rights for plants" and her demeanor changed instantaneously. She pushed away from the table, you know, looked me in the eye and said one word, "Monsanto", you know? So, there's this kind of idea that you know in the plant world, IP rights are very much dominated by a few multinational corporations. And in fact, that's not the case.

In most instances those large multinationals may or may not use PBR. They certainly use patent protection. But a lot of small-, medium-sized breeders are dependent on plant breeders' rights as the only form of intellectual property protection. Also, the public institutions, Agriculture and Agri-Food Canada, the University of Saskatchewan, the University of Guelph, they generally don't pursue more restrictive IP forms like patents as a rule. And PBR is their only option to protect those innovations.

So, you know, that's probably the most prevalent misconception.

There's also a lack of realization that plant breeders' rights actually attempts to kind of combine several forms of IP protection together, so most of it kind of looks and feels like patents, but we also have elements of trademarks in our law. So when you're granted rights for a new variety, one of those rights is exclusive use over what we call the variety denomination. And all that is the name of the variety, and it serves very much like a trademark. It's indicia of goodwill and reputation in the marketplace.

In our world, people know plant varieties by their name, and they'll say that's a great variety, or that's not a great variety, so that naming and that exclusivity over naming is a really powerful tool. A really powerful right if you're title holder. The other element too I should just touch on is a lot of the problems associated with infringement of PBR are very similar to copyright. One of the exclusive rights of the breeder is reproduction of the variety. Well, the thing with plants is they have this kind of propensity to reproduce themselves, right? So that's the thing that they do. They make more copies, so you know most of the infringement that we've seen out in the marketplace is almost like copyright in nature, where someone takes that plant makes multiple copies, benefits from it, and no compensation goes back to the breeder.

Lisa: That's really interesting. I love how you touch up on the other IP rights and the similarities.

I know that you were also Canada's representative to the International Union for Protection of New Plant Varieties. Can you tell me how the plant breeders' rights is being applied internationally and some of the differences between how countries manage their breeders' rights?

Anthony: Yeah, absolutely you know with broad strokes there actually is a lot of harmonization and this is kind of a function of history. The International Union for the Protection of New Plant Varieties, we'll call it UPOV, we won't repeat that, we'll use that as the acronym. You know that convention was actually drafted in 1961, but didn't come into force until 1968. And it really had a limited number of countries participated. They were generally European countries and even up through a revision of the Convention in 1978 to improve it a little bit more and right up to, you know, the early 1990s, that international organization only had about 20 members. And then all of a sudden TRIPS came along, so the Uruguay Round on the you know, of the World Trade Organization, the creation of this international agreement are related to trade related aspects to intellectual property rights, really kind of spurred on this interest in having an IP form for plants. And it really relates to this kind of obscure article of TRIPS 27.3(b) which kind of says, you know, if you are party to this treaty, you either have to protect plants through patents or what's known as a sui generis form of IP protection and all sui generis is Latin for "of its own kind", so a specific form of plant variety protection solely for plants.

And that's really what UPOV system is, and most countries when presented with adheres to the TRIPS agreement kind of went to UPOV system as this harmonized form of IP. So post about 94, 95, we just saw an explosion in membership internationally of countries as signing up to UPOV. So there is a high degree of harmonization within those countries. The conditions for protection are all the same. Generally, the way that the examinations or assessments are done are very similar or the same. So it has a lot of benefits. For a breeder they have a high degree of predictability.

They kind of know if I go into let's say Canada or United Kingdom or Germany, I know what the examination process will look like, I know what rights I will get at the end of the day.

Now there are some nuances. Many countries, and Canada was one of them, when we first joined to UPOV, we joined to a weaker form of IP protection called UPOV 78, and then finally in 2015 we strengthened our IP protection and moved to the most current version of it so UPOV 91. So most countries now have moved to UPOV 91, but you know IP is controversial and it's sometimes difficult for countries to amend legislation. But any new countries that are coming on board into the UPOV system, since I think it's about 2000, your only option is to join that more current version UPOV 91. So, there is really a high degree of harmonization for a large group of countries under this UPOV system. You know, there are some exceptions. In the United States they were really a forerunner in IP protection for plants. Their plant patent that came into force in 1930. So you know many of the lessons of the U.S. system went to inform how UPOV developed over time and they also offered utility patents on plants in the U.S. So in the U.S., it's very much a toolbox of IP for your plants so you can pick and choose what you want to use, but most countries it's this UPOV based PBR system and very highly harmonized.

Lisa: You mentioned patents and I thought we could maybe dig a little bit deeper into actually how plant breeders' rights work because at the core of it, I imagine that this is DNA, to create something that recreates itself and so on. So I was wondering, can you speak about the interrelationship between plant breeders' rights and the patents here in Canada?

Anthony: Well, I can certainly make my best attempt at it. You know that the evolution of kind of the coexistence of those two systems really comes out of out of case law. And you know, we've had two really landmark cases that kind of set the line between you know what to use for PBR protection and what to use for patent protection. Of course, the first is the Harvard mouse case. In that the supreme court ruling was, essentially, you know, made this delineation between higher life forms and lower life forms and things like plants were higher life forms, so were animals. So they were not eligible for patent protection.

But we went a little farther in identifying that in fact subcomponents or subunits of plants were indeed eligible for patent protection. So a specific gene, or a trait, or a change that you've made to a cell you could actually get patent protection, so that's pretty powerful, right? When you have that, you have exclusivity over use and that's much stronger than it is in plant breeders' rights. And then a few years later we had another landmark case which really kind of solidified the R&D investment and the utilization of patents in Canada as related to plants and that was the Monsanto versus Schmeiser case. And in that case it was in fact, a patented gene that confers resistance to herbicide. People know it by generic version Roundup. It's tolerance to actually glyphosate.

And what we saw evolve out of that was, you know, we were starting to see double protection happening now in that particular case they probably didn't have PBR protection. But now moving into the future, what we see is, you know most companies will elect to kind of layer their IP. They'll get PBR on the variety, and if they have a transgene that is patentable subject matter, mostly up-to-date genetic modifications, they'll seek patent protection on that as well.

The one area we're kind of uncertain where things will lead and something I need to talk to my colleagues at CIPO about, is you know, what does the future look like with new breeding techniques?

So new breeding techniques are using things like precision at gene edits. Many of your listeners might know this as things like CRISPR-Cas9, where you're not actually adding new material to a plant's genome, but you're making changes to its existing genome, so you might be knocking a gene out or up  regulating a gene, or making some modifications you know, will that actually be patentable subject matter? And right now we don't know. But that's where a lot of the promising technology is moving towards. So I think we're going to see this general trend of, certainly if you can, you're going to seek patents on specific genes or traits. You're going to seek plant breeders' rights protection on the variety as a whole. And even more than that, we're seeing a greater utilization of trademarks, so trademarks over the naming in addition to what is used as the denomination per plant breeders' rights protection of branding associated with the variety as a whole.

Lisa: It's the combination that we often talk about here at the IP office as well, the use of multiple IP rights to essentially protect your business. Now, you've been Canada's Commissioner for the Plant Breeders' Rights Office for quite some time. How do you think the PBR system is working in Canada?

Anthony: Well, that's a great question. I would say that better than we were but not nearly good enough, is how I would describe it and let me explain. What we were kind of witnessing is for the first 10 to 15 years of implementation of plant breeders' rights in Canada so that period from about early 1990s to the mid 2000s, we just saw a skyrocketing of applications. And then what we found was, as we remained at that weaker form of IP protection, the UPOV 78, we were starting to lose access to new varieties. We were starting to lose investment in plant breeding. We really started to see a drop off so that period from about 2008 right to about 2015, we were losing IP at a rate you know that was almost 5 to 10% per year. And that's really because Canada wasn't keeping up with the rest of the world. For a developed nation we were one of the last to move to UPOV 91.

Now the minute we did in 2015, we started to gain back a lot of those filings, and in fact, foreign direct investment increased dramatically. But I would kind of liken it to if you're in a road race with a bike, you know, we were at a point where we did not even know where others were. We were so far behind.

Canada has now kind of caught up to the back of the peloton, but we are nowhere near being up at the front and we still have some key critical weaknesses in our IP law that innovators kind of look at and say, "well yeah, that's okay, but we can go to other countries where they have stronger IP protection".

In particular, you know, the leaders would be the United States, which draws a lot of investment in R&D.  Australia is outperforming us in the quality of PBR that they offer. Most European countries are well ahead of us, so is Japan. And our key weakness has to do with something called an optional exception called the farmers privilege. And this is really good for farmers. So when you make a purchase, a legal purchase of PBR protected variety, one of the restrictions on the breeder's right is that farmer can save and reuse seed for as long as they wish. But Canada hasn't met its obligations to the last part of that farmers privileged treaty, which is, "within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder." So most countries have a system now where a farmer could save and reseed, but they pay a royalty for doing so back to the innovator. So that helps the innovator recover their investment in plant breeding and helps them spur on more innovation, and it is a key weakness in our Canadian system. We don't have it.

So if you look at a country like Australia, they actually have eight different let's say wheat breeding companies. In Canada, particularly Western Canada, you know we can't really successfully support one. In the European Union, they have 25 companies that breed cereal varieties, where we don't have really any. And we have that public sector in a dominant monopolistic position, providing varieties and there's no room for other entrants into the marketplace. And that's not by design, it's really come as a result of market failure. The taxpayers kind of had to subsidize this activity because you couldn't entice anyone else to get in there. Now when people hear me say that they kind of go, "oh, he doesn't like public sector," and that's quite the opposite. Our public sector breeding is really a strategic resource and they do a wonderful job and they are world class.

But we really have to start moving to a point where it's functioning more like a market-based economy where there's free and fair competition and that they're not just the sole player. I think if we could do that, it would easily kind of propel us to the top five countries securing R&D investment in plant breeding. I'm entirely convinced about it. If we can't, I think we're going to continue to kind of struggle.

But it's not all bad news. You know, the future is bright in other areas, and quite often it's a matter of perspective. Do you view IP as something that will cost you, or do you view IP as something that creates opportunity and benefit? And we have certain sectors, like the horticultural sector, and the ornamental sector, that really kind of view strength and IP rights as being in their long term interests and benefit, and have been very supportive of the utilization of PBR, and they're asking for more. So we are going to work with them and probably in the next few years, I can't tell you exactly when, proposing some regulatory amendments that will further strengthen IP protection for those types of breeders.

So I think the story is, you know, largely good. A little bit bad where we're losing ground to some of our competitors, but we also have some things that we can do to incentivize further investment in plant breeding and those who are coming in the next couple years.

Lisa: Thank you, Anthony. Very interesting to hear your perspectives and thanks for sharing your knowledge and joining us on our journey to have Canadians understand how to use IP more effectively.

It's been a pleasure to have you.

Anthony: The pleasure is all mine. Thank you, Lisa.

Lisa: You've listened to Canadian IP Voices where we talk intellectual property. In this episode, Anthony Parker, who is the Commissioner of Canada's Plant Breeders' Rights Office, explained how Canada's plant breeders' rights offer IP protection to plant breeders. If you are curious to learn more about how plant breeders' rights work, visit Canada.ca/ip-toolbox for CIPO's plant breeders' rights factsheet, or click on the description for this episode for links to Canada's Plant Breeders' Rights Office and also a great overview of how this IP right works in Canada.